It all started so innocuously. Just a simple batch of a dozen-and-a-half patent infringement lawsuits filed in East Texas. All asserting a single patent, aimed at porn content providers for providing content to a website that enabled certain video tagging functionality. In a column back in August, I discussed the strategic thinking behind the choice of defendants and venue, while noting that the true target, Internet porn megalith Pornhub, was itself embracing an active defense approach to the patent owner’s claims, as evidenced by its filing of a Delaware declaratory judgment lawsuit of its own. I foresaw that filing the DJ complaint would be just one element of what I expected Pornhub’s defensive approach would entail, forecasting that “I would not be surprised to see Pornhub file an IPR in short order” as part of Pornhub’s taking advantage of “the panoply of options available to a determined accused infringer, even what that party is initially attacked indirectly.”
Predicting that Pornhub’s active defense would include an IPR filing was not a hard call to make. So I was not surprised when an IPR was filed (against the initial patent asserted in the East Texas cases) in late September by Pornhub’s parent company. IPRs are a first-line defense for accused infringers in modern patent litigation after all. But the battle between Pornhub, its content partners, and patent owner Haulstars has escalated even further, giving us a prime opportunity to consider how patent owners and accused infringers aim to gain a legal advantage over each other in today’s patent litigation landscape. For now, it seems that mutual aggression is the order of the day, with neither side failing to seize an opportunity to expand the battle map.
We can assume that the end result of the legal wrangling will be some kind of settlement, as it is in the majority of patent disputes. To get there, however, determined opponents like Pornhub and Haulstars are engaging each other ever more often in a rapid-fire series of legal entanglements, spanning different courts and the USPTO. Which is precisely the state of affairs in our patent battle of interest. In addition to the original East Texas and Delaware patent cases, in a span of a few months we have added the assertion of eight additional patents against Pornhub by Haulstars in a West Texas filing docketed — a case filed on the same day as Pornhub’s own IPR filing. Four legal venues, nine total patents at issue, all before a single decision on the merits. Welcome to patent assertion circa 2020.
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One easy conclusion is that neither of the combatants is scared to escalate against the other, with each espousing the view that projecting strength is the path to victory. Take Haulstars’ decision to add eight patents into the fray, while opening up a second Texas front, as an example. The message is clear — Haulstars sees this dispute as worth digging deep into its portfolio and putting its patent assets at risk in order to get the results it seeks. To that end, its complaint lays out a detailed invention story explaining how the patented technology is at the core of Haulstars’ own success in providing the “de facto industry standard for interactive video.” In addition, the complaint goes into extensive detail as to how interactive video technology is used by Pornhub to make money, presumably lots of it. The signal is an obvious one. Haulstars is seeking “real money” from Pornhub, and will do all it can to get it. Just as Pornhub is doing its best to negate the threat from Haulstars with its own filings of the IPR and DJ complaint.
Along those lines, it was not surprising to see Haulstars itself decide to take an active approach in terms of trying to preserve its choice of Texas as its preferred venue for the adjudication of its claims. To that end, it filed a (still-pending) motion to dismiss in the Delaware declaratory judgment action, arguing that its Texas lawsuits against Pornhub’s content partners does not give rise to declaratory judgment jurisdiction. At the same time, those content partners have filed a motion to stay the original East Texas lawsuit pending the resolution of Pornhub’s IPR filing. Yes, it is a dizzying pace of filings and counter-filings, for a set of cases that are in their infancy. But that is how the patent litigation game is now played, at least for cases that are important to the parties.
Ultimately, absent settlement, these are just the opposing salvos in what is shaping up to be a multiyear battle by these companies across multiple fronts. In the interim, we can hope that Pornhub users will remain (blissfully?) unaware of the patent wranglings. For IP litigators interested in seeing how sophisticated litigants thrust-and-parry against each other, however, these cases are already very interesting to watch. We will see how things turn out as this patent porn war plays on.
Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.